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Overview

The 16th Annual Advanced Patent Law Institute is coming to you virtually this year! While we will miss being at the United States Patent and Trademark Office this spring, we've developed this year's program to make the most of your experience with us online. Spanning three afternoons, the program continues to offer a unique opportunity to hear from USPTO senior staff, leading practitioners, academics, and members of the federal judiciary on the latest developments in patent law. 

Event Schedule

Program is subject to change.
All times are Central Time Zone.

  • Time
    Credit
    Subject
    Speaker
  • Tuesday Afternoon, Mar. 23, 2021
    Presiding Officer:
    J. Devlin Hartline, Antonin Scalia Law School, George Mason University - Arlington, VA
  • All Times Listed are in CENTRAL Time.

  • 11:50 am
    Welcoming Remarks

  • 12:00 pm
    0.50 hr
    Opening Keynote: Update from the USPTO
    Hear about the current priorities, programs, and initiatives underway at the Office.

    Drew Hirshfeld, Commissioner for Patents, Performing the Duties of the Under Secretary of Commerce for Intellectual Property and Director, U.S. Patent and Trademark Office - Alexandria, VA

  • 12:30 pm
    Break

  • 12:40 pm
    0.75 hr
    Section 101: Impacts of the New Guidelines on Patent Subject Matter Eligibility and Federal Circuit Decisions
    Hear a brief overview of the PEG for subject matter eligibility and its impact on patent application allowance rates and PTAB affirmance rates. Plus, examine the various types of deference, if any, given by the Federal Circuit to the USPTO’s PEG, as well as patentability decisions and practice tips.

    Stephen G. Kunin, Maier & Maier PLLC - Alexandria, VA
    Andrew A. Toole, U.S. Patent and Trademark Office - Alexandria, VA

  • 1:25 pm
    Break

  • 1:35 pm
    0.75 hr
    Written Description Requirements and Section 112(f)
    For years, the law involving means-plus-function clauses under Section 112(f) was quiescent and stable. But Examiners have been construing claim elements under Section 112(f) and applying the law of Section 112(f) - BOTH in high tech AND life sciences. Hear discussion on the potential pitfalls and practical solutions for drafting claims and specifications.

    Dale S. Lazar, Antonin Scalia Law School George Mason University - Arlington, VA
    Nicole Woods, Eli Lilly and Company - Somerville, NJ

  • 2:20 pm
    Break

  • 2:30 pm
    1.00 hr
    Issues of Preparing and Prosecuting AI-Based Applications
    Despite AI becoming more ubiquitous, underscoring innovation in all fields of technology, the path to patentability for AI-based inventions is still in flux. Representatives of both the USPTO and the EPO provide their insight and outlook regarding trends, best practices, and common issues in AI patenting.

    Moderator:
    Michelle K. Holoubek, Sterne Kessler Goldstein Fox - Washington, DC
    Panelists:
    Robert Bahr, U.S. Patent and Trademark Office - Alexandria, VA
    Pia Björk, European Patent Office - Munich, Germany

  • 3:30 pm
    Break

  • 3:40 pm
    0.75 hr
    China Patent Update: Prior Art Explosion, Rapid Evolution of the CNIPA and Courts, and Filing and Prosecution Issues
    China has accomplished a massive evolution of its patent system in the last decade, with enormous increase in filings, rapid evolution of the CNIPA and patent-focused courts, and integration of its patent system into an ambitious global innovation agenda. This warrants understanding in order to effectively deal with the rapidly evolving global IP ecosystem.

    Moderator:
    Robert Greene Sterne, Sterne, Kessler, Goldstein & Fox P.L.L.C. - Washington, DC
    Panelists:
    Mark Cohen, Berkeley Center for Law & Technology - Berkeley, CA
    Richard Seidel, U.S. Patent and Trademark Office - Alexandria, VA

  • 4:25 pm
    Adjourn

  • Time
    Credit
    Subject
    Speaker
  • Wednesday Afternoon, Mar. 24, 2021
    Presiding Officer:
    Karin Ferriter, U.S. Patent and Trademark Office - Alexandria, VA
  • 12:00 pm
    0.75 hr
    The USPTO & COVID-19 – Innovation through Adversity
    Learn more about the high-level filing trends in various COVID-19 related technological fields; plus hear an overview of the Cooperative Patent Classification (CPC) System, as it relates to these technologies.

    Antoinette F. Konski, Foley & Lardner LLP - Palo Alto, CA
    Jerry Lorengo, U.S. Patent and Trademark Office - Alexandria, VA

  • 12:45 pm
    Break

  • 12:55 pm
    0.50 hr
    License Agreements: Hot Topics
    A discussion of the Rule 56 implications of Immunex Corp. v. Sandoz Inc. when licensing patent rights, and an overview of compulsory licensing and government march-in rights during a pandemic.

    Jeffrey A. Wolfson, Haynes and Boone, LLP - Washington, DC

  • 1:25 pm
    Break

  • 1:35 pm
    0.50 hr
    How to Think Like an Examiner

    Eddie Lefkowitz, U.S. Patent and Trademark Office - Alexandria, VA

  • 2:05 pm
    Break

  • 2:15 pm
    0.50 hr
    AI Tools for Patents at the USPTO
    The USPTO Strategic Plan (2018-2022) emphasizes the development and delivery of artificial intelligence (AI) and machine learning (ML) within our information technology tools for users of the patent system. Explore the AI-based solutions under development at the USPTO for patent search and patent classification.

    Matthew Such, U.S. Patent and Trademark Office - Alexandria, VA

  • 2:45 pm
    Break

  • 2:55 pm
    1.00 hr ethics
    Professional Responsibility and Practice Before the USPTO
    Examine the ethics rules issued by the USPTO and how they are applied and enforced by today’s Office of Enrollment and Discipline, including ethics scenarios and applicable case law. Plus, explore current developments overseen by the OED, including current cases and the Diversion Pilot Program as well as USPTO pro bono programs.

    Tim Rooney, U.S. Patent and Trademark Office - Alexandria, VA

  • 3:55 pm
    Adjourn

  • Time
    Credit
    Subject
    Speaker
  • Thursday Afternoon, Mar. 25, 2021
    Presiding Officer:
    William LaMarca, U.S. Patent and Trademark Office - Alexandria, VA
  • 12:00 pm
    0.50 hr
    PTAB Update
    Hear an update from the Chief Judge on recent trends and developments in PTAB appeal and trial proceedings.

    Hon. Scott R. Boalick, Chief Judge, Patent Trial and Appeal Board, U.S. Patent and Trademark Office - Alexandria, VA

  • 12:30 pm
    Break

  • 12:40 pm
    1.00 hr
    Practice and Issues Before the PTAB
    Discuss changes to the PTAB with the advent of the new administration, including the latest developments with discretionary denials of institution and which party has the burden on a particular issue. Plus, explore any new decisions by the courts as to whether protective orders will prevent litigation counsel from also acting as IPR counsel. 

    Moderator:
    Teresa Stanek Rea, Crowell & Moring, LLP - Washington, DC
    Panelists:
    Hon. Linda E. Horner, U.S. Patent and Trademark Office - Alexandria, VA
    Joe Matal, Haynes and Boone, LLP - Washington, DC
    Hon. Michael Tierney, U.S. Patent and Trademark Office - Alexandria, VA

  • 1:40 pm
    Break

  • 1:50 pm
    0.75 hr
    Best Practices for Ex Parte Appeals
    Learn what’s new in ex parte appeals, including current average appeal timelines and the new option to expedite frames, the LEAP program to promote and encourage oral argument by less experienced practitioners, and practice tips from both sides of the bench.

    Hon. Ken Barrett, U.S. Patent and Trademark Office - Alexandria, VA
    Courtenay C. Brinckerhoff, Foley & Lardner LLP - Washington, DC

  • 2:35 pm
    Break

  • 2:45 pm
    0.50 hr
    Arthrex: Where Are We Now?
    In Arthrex, Inc. v. Smith & Nephew, Inc., the Supreme Court will decide the constitutionality of the PTAB, and whether the APJs in the PTAB are principal officers who must be appointed by the President and confirmed by the Senate. If they are, their appointment by the Director of the USPTO is unconstitutional and the Supreme Court will decide if the Federal Circuit properly remedied this constitutional defect by severing the APJ job-security protections, and thereby converting them into inferior officers. Explore this case and the oral argument, which is being held on March 1.

    Adam Mossoff, Antonin Scalia Law School, George Mason University - Arlington, VA

  • 3:15 pm
    Break

  • 3:25 pm
    1.00 hr
    Federal Circuit Judicial Panel
    Hear from a panel of judges from the Court of Appeals for the Federal Circuit as they discuss their experiences hearing and trying patent cases.

    Moderator:
    Hon. Paul R. Michel, Chief Judge, Retired, U.S. Court of Appeals for the Federal Circuit - Washington, DC
    Panelists:
    Hon. Pauline Newman, U.S. Court of Appeals for the Federal Circuit - Washington, DC
    Hon. Kathleen M. O'Malley, U.S. Court of Appeals for the Federal Circuit - Washington, DC

  • 4:25 pm
    Adjourn

Download Schedule

Conference Faculty

Robert Bahr

U.S. Patent and Trademark Office
Alexandria, VA

Hon. Ken Barrett

U.S. Patent and Trademark Office
Alexandria, VA

Pia Björk

European Patent Office
Munich, Germany

Hon. Scott R. Boalick

Chief Judge, Patent Trial and Appeal Board, U.S. Patent and Trademark Office
Alexandria, VA

Courtenay C. Brinckerhoff

Foley & Lardner LLP
Washington, DC

Mark Cohen

Berkeley Center for Law & Technology
Berkeley, CA

Drew Hirshfeld

Commissioner for Patents, Performing the Duties of the Under Secretary of Commerce for Intellectual Property and Director, U.S. Patent and Trademark Office
Alexandria, VA

Michelle K. Holoubek

Sterne Kessler Goldstein Fox
Washington, DC

Hon. Linda E. Horner

U.S. Patent and Trademark Office
Alexandria, VA

Antoinette F. Konski

Foley & Lardner LLP
Palo Alto, CA

Stephen G. Kunin

Maier & Maier PLLC
Alexandria, VA

Dale S. Lazar

Antonin Scalia Law School George Mason University
Arlington, VA

Eddie Lefkowitz

U.S. Patent and Trademark Office
Alexandria, VA

Jerry Lorengo

U.S. Patent and Trademark Office
Alexandria, VA

Joe Matal

Haynes and Boone, LLP
Washington, DC

Hon. Paul R. Michel

Chief Judge, Retired, U.S. Court of Appeals for the Federal Circuit
Washington, DC

Adam Mossoff

Antonin Scalia Law School, George Mason University
Arlington, VA

Hon. Pauline Newman

U.S. Court of Appeals for the Federal Circuit
Washington, DC

Hon. Kathleen M. O'Malley

U.S. Court of Appeals for the Federal Circuit
Washington, DC

Teresa Stanek Rea

Crowell & Moring, LLP
Washington, DC

Tim Rooney

U.S. Patent and Trademark Office
Alexandria, VA

Richard Seidel

U.S. Patent and Trademark Office
Alexandria, VA

Robert Greene Sterne

Sterne, Kessler, Goldstein & Fox P.L.L.C.
Washington, DC

Matthew Such

U.S. Patent and Trademark Office
Alexandria, VA

Hon. Michael Tierney

U.S. Patent and Trademark Office
Alexandria, VA

Andrew A. Toole

U.S. Patent and Trademark Office
Alexandria, VA

Jeffrey A. Wolfson

Haynes and Boone, LLP
Washington, DC

Nicole Woods

Eli Lilly and Company
Somerville, NJ

Planning Committee

Hon. Georgianna Braden

U.S. Patent and Trademark Office, Patent Trial and Appeal Board
North Richland Hills, TX

Courtenay C. Brinckerhoff

Foley & Lardner LLP
Washington, DC

Karin Ferriter

U.S. Patent and Trademark Office
Alexandria, VA

Joanna Jefferson

The University of Texas School of Law
Austin, TX

Stephen G. Kunin

Maier & Maier PLLC
Alexandria, VA

William L. LaFuze

McKool Smith
Houston, TX

William LaMarca

U.S. Patent and Trademark Office
Alexandria, VA

Dale S. Lazar

Antonin Scalia Law School George Mason University
Arlington, VA

David L. McCombs

Haynes and Boone, LLP
Dallas, TX

Adam Mossoff

Antonin Scalia Law School, George Mason University
Arlington, VA

Andrew Nalven

U.S. Patent and Trademark Office
Alexandria, VA

Teresa Stanek Rea

Crowell & Moring, LLP
Washington, DC

Whitney Remily

Birch Stewart Kolasch & Birch, LLP
Falls Church, VA

John W. Ryan

Owens & Minor
Mechanicsville, VA

Robert Greene Sterne

Sterne, Kessler, Goldstein & Fox P.L.L.C.
Washington, DC

Shirley Webster

Ocean Tomo, LLC
Houston, TX

Jeffrey A. Wolfson

Haynes and Boone, LLP
Washington, DC

Credit Info

MCLE Credit
UT Law CLE will report credit to the State Bar of Texas on your behalf. If you are claiming credit in the last week of your birth month, self-report your credit directly to the State Bar of Texas at texasbar.com. A Certificate of Completion will be emailed to you upon claiming credit.
Self-report your CLE credit directly to the State Bar of California at calbar.ca.gov. Print and keep the Certificate of Completion for your records. A Certificate of Completion will be emailed to you upon claiming credit.
UT Law CLE will report attendance on behalf of the attorney to the Delaware CLE Commission within 30 days of the conference. Please contact Laura Tolin with any questions or concerns: ltolin@law.utexas.edu.
Self-report your CLE credit directly to The Florida Bar at www.floridabar.org. You will receive a Certificate of Attendance at the conference to keep for your records. UT Law CLE will maintain Attendance Records for four years.  
UT Law CLE will verify the number of Illinois attorneys in attendance within 10 days after the conference and will report your credit to the MCLE Board of the Supreme Court of Illinois. UT Law CLE will maintain Attendance Records for four years.
As The University of Texas School of Law is a State Bar of Texas approved MCLE provider (Sponsor #13), our courses are presumptively approved for MCLE credit based on a 50-minute credit hour, and in accordance with the Regulations of the Supreme Court of New Jersey Board on Continuing Legal Education. More information and details can be found in the Board of Continuing Legal Education Regulations.

New Jersey MCLE credit is based on a 50-minute credit hour. This accreditation requires attendance verification. In compliance with the rules, UT Law CLE monitors and records attendee responses to questions that randomly appear during the live webcast presentation. The response record is detailed on the Certificate of Completion.

To claim New York MCLE credit, New Jersey credit option must be selected PRIOR to viewing the live webcast. Upon claiming credit, a Certificate of Completion will be emailed to you. Self-report your credit directly to the Supreme Court of New Jersey Board on CLE.
As The University of Texas School of Law is a State Bar of California approved MCLE provider (#1944), and the State Bar of California is a New York Approved Jurisdiction, our courses are approved for MCLE credit based on a 50-minute credit hour, and in accordance with the Program Rules and the Regulations and Guidelines of the New York State Continuing Legal Education Board. More information and details can be found at Section 6 of the Regulations and Guidelines.

New York MCLE credit is based on a 50-minute credit hour. This accreditation requires attendance verification. In compliance with the rules, UT Law CLE monitors and records attendee responses to questions that randomly appear during the live webcast presentation. The response record is detailed on the Certificate of Completion.

To claim New York MCLE credit, New York credit option must be selected PRIOR to viewing the live webcast. Upon claiming credit, a Certificate of Completion will be emailed to you. Self-report your credit directly to the New York State CLE Board.
UT Law CLE will report credit on your behalf to The Supreme Court of Ohio within 30 days after the conference. You will receive a Certificate of Attendance at the conference to keep for your records.
The University of Texas School of Law (Provider #169) live webcast presentations meet the requirements and are presumptively approved by the Oklahoma Bar Association for MCLE credit based on a 50-minute credit hour. This accreditation requires attendance verification. In compliance with the rules, UT Law CLE monitors and records attendee responses to questions that randomly appear during the live webcast presentation. The response record is detailed on the Certificate of Completion.

To claim Oklahoma MCLE credit, Oklahoma credit option must be selected PRIOR to viewing the live webcast. Upon claiming credit, a Certificate of Completion will be emailed to you. UT Law CLE will report credit on your behalf to the Oklahoma Bar Association within 30 days after the webcast.
UT Law CLE is an approved provider of Pennsylvania credit, sponsor #236. Attorney attendance will be reported to Pennsylvania within 2 weeks of the webcast conclusion. Attorneys are not able to report this credit on their own, and UT Law CLE pays all associated fees for the credit hours. Contact Laura Tolin, ltolin@law.utexas.edu, if you have additional questions.
The program has been approved for Virginia MCLE credit. We will follow up with attendees who select Virginia credit and provide them with a Certificate of Attendance with the course number that can be used to self-report to Virginia. Contact Laura Tolin, Accreditation Coordinator, with questions or concerns at ltolin@law.utexas.edu.
Note on Self-Reporting Your Credits in Another State
If you wish to satisfy MCLE or other professional education requirements in another state for a program offered by the University of Texas School of Law, please check with the state bar or other licensing authority in that state to ensure it will qualify for self-reporting your credits.

To claim Other States MCLE credit, Other States credit option must be selected PRIOR to viewing the live webcast. Upon claiming credit, a Certificate of Completion will be emailed to you.

This accreditation requires attendance verification. UT Law CLE monitors and records attendee responses to questions that randomly appear during the live webcast presentation. The response record is detailed on the Certificate of Completion.

MCLE credit is presented based on a 60-minute credit hour.
Other Credit
The University of Texas School of Law (Provider #250) live webcast presentations meet the requirements and are presumptively approved by the Texas State Board of Public Accountancy for Texas Accounting CPE credit based on a 50-minute credit hour. Approved for general CPE credit only.

This accreditation requires attendance verification. In compliance with the rules, UT Law CLE monitors and records attendee responses to questions that randomly appear during the live webcast presentation. The response record is detailed on the Certificate of Completion.

To claim Texas Accounting CPE credit, the Texas Accounting CPE credit option must be selected PRIOR to viewing the live webcast. Upon claiming credit, a Certificate of Completion will be emailed to you. Self-report your CPE credit directly to the Texas State Board of Public Accountancy.

Contact Laura Tolin, ltolin@law.utexas.edu, if you have additional questions.

Key Dates

Live Webcast – Mar 23-25, 2021
Conference Concluded
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Live Webcast
Last day for Individual early registration: Feb 1, 2021

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Last day for USPTO Employee early registration: Mar 23, 2021

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Last day for Group (5 registrants minimum) early registration: Mar 23, 2021

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Last day for Group (10 registrants minimum) early registration: Mar 23, 2021

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Last day for cancellation (full refund): Mar 17, 2021

$50 processing fee applied after this date

Last day for cancellation: Mar 19, 2021

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